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Mark · Site Admin Joined: 13 Nov 2007 Posts: 1052

Small Special Education Company Battles Mattel Over Right to Use the Words "AND SAY" on Its Products

http://www.mmdnewswire.com/special-education-company-mattel-3326.html

Excerpt:

Super Duper, started by Thomas and Sharon Webber 22 years ago in Greenville South Carolina, has provided tens of thousands of autistic and other learning disabled children with helpful educational products. Since 1987, the Webbers have used the words “AND SAY” and “SAY AND” in the titles of their speech and language materials, including workbooks, card decks, and games.

In March, 2004, Mattel opposed a trademark registration the Webbers had filed for use for the name “SORT AND SAY” on a line of special education magnetic games. A year later, Mattel filed to cancel three other Super Duper registered marks , FISH & SAY, FOLD AND SAY, and SEE IT!, SAY IT!.

Super Duper then filed a lawsuit in federal court, seeking a finding that its 15 SAY trademarks did not infringe on any of Mattel’s trademarks. Mattel responded by claiming Super Duper’s use of these SAY marks on its special education products amounted to trademark infringement and dilution of the Mattel’s SEE ‘N SAY electronic pull toy. Mattel asked the court to prevent Super Duper from publishing any of its materials using the 15 marks, and sought $10 million in damages.

The case was tried last week. At trial, Super Duper showed that, unlike Mattel, it is a direct mail order seller, has no retail outlets, does not compete in the toy industry, and makes only therapy materials for highly trained professionals and parents to use with autistic and other special needs children.

Nevertheless, the trial court, ignoring the usual practice of ruling on complicated trademark issues from the bench, submitted the case to the jury, which found that seven of Super Duper’s marks had infringed upon and diluted Mattel’s mark. It awarded the $5.6 billion dollar (annual income) toy company $400,000 in damages plus the right to prevent the Webbers from selling any of their educational products named with these marks.

The Webbers insist that none of their marks infringe upon or dilute the Mattel toy trademarks, and that nothing that they have done has hurt Mattel in any way. This week they will appeal the verdict to the Fourth Circuit Court of Appeals and continue to fight for the right to use “AND SAY” on their special education products.